Ex Parte Gogin et al

Patent Trial and Appeal Board

Aug 29, 2017

13513921 (P.T.A.B. Aug. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/513,921 06/05/2012 Nicolas Pierre Bruno Gogin 2009P01644WOUS 8407
24737 7590 08/31/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue REMALY, MARK DONALD
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
08/31/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS PIERRE BRUNO GOGIN, RAOUL FLORENT,
and PASCAL YVES FRANCOIS CATHIER
Appeal 2015-008125
Application 13/513,921
Technology Center 3700
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 2, 3, 6—9, 11, 13, and 15—26, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed June 9, 2014), Reply Brief (“Reply Br.,” filed Sept. 10,
2015), and Specification (“Spec.,” filed June 5, 2012), and to the Examiner’s
Answer (“Ans.,” mailed Aug. 11, 2014) and Final Office Action (“Final
Act.,” mailed Dec. 16, 2013).
2 According to the Appellants, the real party in interest is Koninklijke
Philips Electronics N.V. Appeal Br. 3.
Appeal 2015-008125
Application 13/513,921
STATEMENT OF THE CASE
The Appellants’ “invention relates to x-ray guided procedures” and
particularly to a method and apparatus “for processing an x-ray image.”
Spec. p. 1,11. 7—10.
Claims 2, 9, 18, and 21 are the independent claims on appeal. Claims
2 and 9 (Appeal Br. 44, 45 (Claims App.)) are illustrative of the subject
matter on appeal, and are reproduced below:
2. An imaging apparatus comprising an ultrasound
probe and configured for:
acquiring, from x-rays, an x-ray image that includes said
probe;
detecting, in said image, said probe; and
registering said probe, said registering including
estimating a position, and an orientation, of said probe relative
to a reference coordinate system, said apparatus further
configured:
for matching a digitally rendered projection of a three-
dimensional (3D) model of said probe with the detected probe
in said x-ray image; and
such that the estimation is retrieved from said 3D model.
9. A non-transitory computer readable medium for
registration based on an ultrasound probe, said medium
embodying a computer program having instructions executable
by a processor for performing a plurality of acts, from among
said plurality there being the acts of:
acquiring, from x-rays, an x-ray image that includes said
probe;
detecting, in said image, said probe;
registering said probe, said registering including
estimating a position, and an orientation, of said probe relative
to a reference coordinate system;
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detecting an interventional device in said x-ray image;
and
manipulating, automatically rather than manually, a field
of view of said probe so as to maintain, within said field of
view, said interventional device as said device moves.
REJECTIONS
Claims 2, 3, 6—9, 11, 13, and 15—26 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 2.
Claims 2, 3, 7, 8, 11,13, 15—23, and 26 stand rejected under pre-AIA
35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 4.
Claims 2, 3, 7, 8, 11,13, 15—23, and 26 stand rejected under pre-AIA
35 U.S.C. § 112, second paragraph, as being incomplete for omitting
essential elements. Id.
Claims 2, 3, 6—9, 11, 13, 15—23, 25, and 26 stand rejected under pre-
AIA 35 U.S.C. § 102(b) as being anticipated by Gerard et al.
(US 2007/0276243 Al, pub. Nov. 29, 2007) (“Gerard”). Id. at 8.
Claim 24 stands rejected under pre-AIAI 35 U.S.C. § 103(a) as being
unpatentable over Gerard and Boctor et al. (US 2005/0261591 Al, pub.
Nov. 24, 2005) (“Boctor”). Id. at 15.
ANALYSIS
Claims 2, 3, 7, 8, 11, 13, 15—23, and 26
New Ground of Rejection
Pursuant to 37 C.F.R. § 41.50(b), independent clams 2, 18, and 21 are
hereby rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite, because the precise scope and meaning of the limitations of the
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Application 13/513,921
claims cannot be determined. Because the same indefmiteness issue affects
dependent claims 3, 7, 8, 11, 13, 15—17, 19, 20, 22, 23, and 26, they are also
rejected on the same basis.
Independent claim 2 recites “[a]n imaging apparatus comprising an
ultrasound probe and configured for: acquiring[,] . . . detecting[,] . . . and
registering[,] . . . said apparatus further configured for matching. . .” Appeal
Br. 44. Independent claim 18 similarly recites “[a]n imaging apparatus
comprising: an ultrasound system that includes an ultrasound probe; and an
X-ray system configured for acquiring[,] . . . said apparatus further
configured for . . . deciding . . .” Id. at 46. Independent claim 21 also recites
“[a]n imaging apparatus comprising an ultrasound probe and configured for:
acquiring[,] . . ,detecting[,] . . . and registering[,] . . . sais apparatus being
further configured for . . . tracking . . . and for . . . generating . . . beams ...”
Id. at 46-47.
The independent claims are indefinite because one of ordinary skill in
the art cannot ascertain without considerable speculation what the inventor
regards as the invention nor the scope and meaning of the claims. The
claims require an apparatus and a probe or system(s) “and configured for,”
with the apparatus further configured to perform other functions. There are
at least three reasonable interpretations of what the claims require. One is
that the claims require an apparatus comprising a probe or system(s) such
that the probe or system(s) is configured to perform the functions, and the
Specification must provide adequate support for the probe or system being
configured as such. The second is that the claims require an apparatus
comprising a probe or system(s) and something else, the some other
“implied] structure, e.g., something akin to a processor or circuitry”
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(Appeal Br. 8), in which case the structure must be claimed. See In re Zletz,
893 F.2d 319, 322 (Fed. Cir. 1989) (limitations from the Specification are
not read into the claims when the claims can be amended to impose clarity).
The third possible interpretation is that the claims require an apparatus
comprising a probe or system(s), the apparatus configured to perform some
or all of the functions, in which case the claims are nonsensical in requiring
an apparatus comprising an apparatus to perform functions.
As such, the independent claims 2, 18, and 21 (and thus also their
dependent claims 3, 7, 8, 11, 13, 15—17, 19, 20, 22, 23, and 26) are
indefinite.
35 U.S.C. §§ 112, 102, and 103
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a
rejection of the claims as anticipated by or as obvious over the prior art must
be reversed as impermissibly involving speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862—63 (C.C.P.A.
1962). For similar reasons, we are also unable to ascertain whether these
indefinite claims fail to satisfy the written description requirement and/or
whether they are incomplete for omitting essential elements. Therefore, the
rejections under 35 U.S.C. §§ 112, 102, and 103 of claims 2, 3, 7, 8, 11, 13,
15—23, and 26 are not sustained, pro forma.
Claims 6, 9, 24, and 25
35 U.S.C. § 112 — Written Description
The Examiner rejects independent claim 9 and its dependent claims 6,
24, and 25 under 35 U.S.C. § 112, first paragraph, as failing to comply with
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the written description requirement because they contain subject matter not
described in the Specification such as to reasonably convey to one skilled in
the art that the inventor had possession of the claimed invention at the time
the application was filed. Final Act. 2—3. Specifically, the Examiner finds
that the Specification does not provide adequate support for the functions of
“detecting an interventional device in said x-ray image,” and of
“manipulating, automatically rather than manually, a field of view of said
probe so as to maintain, within said field of view, said interventional device
as said device moves,” as recited in independent claim 9. Id. at 3.
The Appellants contend the rejection is in error because the
Specification provides adequate support at page 4, line 29 through page 5,
line 7, page 5, lines 15—22, page 8, line 14 through page 9, line 18, and at
Figure 4. Appeal Br. 27, Reply Br. 26—33. After consideration of all the
arguments presented in the Appeal and Reply Briefs, we are not persuaded
of error on the part of the Examiner.
Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). To satisfy the written
description requirement, the specification must describe the invention in
sufficient detail so “that one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing date sought,” {In re
Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quoting Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)), i.e., “whether the
disclosure of the application relied upon reasonably conveys to those skilled
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in the art that the inventor had possession of the claimed subject matter as of
the filing date” (AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed.Cir.1991)).
The Specification provides that “the invention relates to a system
comprising an x-ray system as well as an ultrasound system, wherein the
system is equipped with a computer program for performing the method.”
Spec. p. 1,11. 8—10. The method can comprise “the step of detecting an
interventional device in the x-ray image and manipulating the probe so that
the interventional device is within the field of view of the probe. It is noted
that this manipulation may be performed manually as well as automatically.”
Id. at p. 4,11. 29-32. The computer program
is provided by means of which the above described method may
be performed automatically, or at least predominantly
automatically. Therefore, the computer program comprises sets
of instructions for storing a x-ray image generated by an x-ray
system, sets of instructions for detecting an ultrasound probe in
that x-ray image, and sets of instructions for registering the probe
and thus estimating the position and orientation of the ultrasound
probe relative to a reference coordinate system[, and] ... for
receiving data representing a 3D model of the ultrasound probe.
Such a computer program may be implemented according to a
further embodiment of the invention in a system including an x-
ray system, an ultrasound system with a[n] ultrasound probe, and
a processing unit. . . . Such a computer program is preferably
loaded into a work memory of a data processor. The data
processor is thus equipped to carry out the method of the
invention.
Id. atp. 5,11. 15—28.
The detecting of the interventional device is by “usual object detection
means that rely on the spatial signature of the device.” Id. at p. 8,11. 21—23.
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The detection of the interventional device can also rely on “its motion
characteristics (for instance, the device is animated by a cardiac motion plus
a steering motion, seen in projection).” Id. at p. 8,11. 24—25. The enhanced
two-dimensional view resulting from an adapted visualization of the device
(with blinking/flashing or coloring) in the x-ray image “provides the
ultrasound user with an easy way of controlling the steering of the probe
based on the high resolution x-ray images. Of course, this steering is also
made easier by the visualization of the ultrasound cone as shown in
figure 3.” Id. at p. 9,11. 8—11.
[Alternatively or complementarily, a command S6a can be
issued to the beam-steering module of the ultrasound system 100,
as to which field of view one should generate in order to nicely
visualize the device at the center of the ultrasound cone (volume
or image). The probe steering module, based on the
ultrasound/x-ray registration information will determine and
apply the relevant set parameters enabling this device-driven
steering.
Id. atp. 9,11. 13-17.
As such, the Specification provides support sufficient to reasonably
convey to one of ordinary skill in the art that the Appellants had possession
of a computer program with instructions to detect the interventional device.
However, the Specification does not discuss the program having instructions
to manipulate a field of view. Rather, the Specification provides for a user
to manipulate a probe by controlling the steering of the probe such that the
interventional device can be visualized. Although the Specification provides
that the maneuvering of the probe to get a particular view can be done
“automatically” (Spec. p. 4,11. 29—32), the Specification does not include
that function in the description of the sets of instructions for the program (id.
p. 5,11. 15—28). Moreover, the Specification does not discuss an algorithm
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such instructions would cause the processor to execute. At best, the
Specification provides that the program has instructions executable by the
processor to issue a command to the ultrasound system as to which view the
user should generate to best visualize the device {id. at p. 9,11. 13—17). But
it is the steering module of the probe that would then apply the parameters to
manipulate the view. The Specification does not reasonably convey to one
of ordinary skill in the art that the Appellants had possession of a program
with instructions executable by the processor, that acquires an image, detects
the probe and device, and registers the probe, to also manipulate the field of
view, as recited by claim 9, or to manipulate the probe, as recited by
dependent claim 24 (Appeal Br. 47 (Claims App.) (“said manipulating
comprising maneuvering said probe”).
Based on the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 112, first paragraph, of independent claim 9 and of dependent
claims 6, 24, and 25.
35 U.S.C. § 102 — Anticipation
The Appellants contend that the Examiner’s rejection of independent
claim 9 is in error because Gerard does not disclose instructions executable
by a processor for automatically manipulating a field of view of the probe to
maintain within the field of view, the interventional device as the device
moves, as required by the claim. See Appeal Br. 37.
The Examiner finds, in relevant part, that Gerard teaches, at
paragraphs 49, 56, 73, and 84, a computer readable medium with
instructions causing a processor to “manipulate[e] said probe so that said
interventional device is within a field of view of the said probe.” Final
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Act. 8—9. The Examiner gives the term “manipulating” its broadest
reasonable interpretation of “control[ling] by the hands or by mechanical
means,” and, thus, finds that Gerard’s use of a belt automatically controls the
probe to track the device automatically with the controlling means. Id. at 9.
However, claim 9 requires a computer readable medium with
instructions to cause a processor to acquire images, detect a probe and
device, register the probe, and manipulate a field of view. Appeal Br. 45
(Claims App.). Even assuming Gerard’s belt automatically controls the
probe to manipulate the view (Final Act. 9), the Examiner has not
adequately explained or shown, such that one of ordinary skill in the art
would understand, where or how Gerard discloses that a processor is caused,
by program instructions, to manipulate the field of view. Gerard discloses
that the functions of its invention can be implemented by software (Gerard
1 84) and that, at best, a belt can automatically control, i.e., manipulate, a
probe {id. 149). However, Gerard does not disclose that the “automatic[]”
control of the probe is performed by a processor that executes instructions to
manipulate the view.
Based on the foregoing, we do not sustain the Examiner’s rejection of
independent claim 9 and dependent claims 6 and 25 under 35 U.S.C. § 102.
35 U.S.C. § 103 — Obviousness
The Appellants contend that the Examiner’s rejection of dependent
claim 24 is in error because the combination of Gerard and Boctor does not
teach the instructions comprising maneuvering a field of view by
maneuvering a probe, as required by the claim. See Appeal Br. 39-41.
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The Examiner finds that Gerard does not teach maneuvering a probe
and relies on Boctor for this limitation. Final Act. 15 (citing Boctor 132).
Boctor, at paragraph 32, discloses a mechanical arm for controlling
the position and orientation of an ultrasound probe. However, Boctor does
not disclose that the mechanical arm maneuvers the probe by executing
instructions embodied on a computer readable medium, as required by
claim 24. As such, Boctor does not cure the deficiency of Gerard.
Based on the foregoing, we do not sustain the Examiner’s rejection of
dependent claim 24 under 35 U.S.C. § 103.
DECISION
The Examiner’s rejections of claims 2, 3, 7, 8, 11, 13, 15—23, and 26
under pre-AIA 35 U.S.C. § 112 are REVERSED pro forma.
The Examiner’s rejection of claims 6, 9, 23, and 24 under pre-AIA
35 U.S.C. § 112 is AFFIRMED.
The Examiner’s rejection of claims 2, 3, 7, 8, 11, 13, 15—23, and 26
under pre-AIA 35 U.S.C. § 102(b) is REVERSED pro forma.
The Examiner’s rejection of claims 6, 9, 24, and 25 under pre-AIA
35 U.S.C. § 102(b) is REVERSED.
The Examiner’s rejection of claim 24 under pre-AIA 35 U.S.C.
§ 103(a) is REVERSED.
A NEW GROUND OF REJECTION has been entered for claims 2, 3,
7, 8, 11, 13, 15—23, and 26 under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite.
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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